I previously blogged about a case, Salba Corp. v. Ralston, where there were two different owners of SALBA-formative marks. Salba Corp. owned the trademark SALBA (a varietal of chia seed) and the Ralstons then assigned their SALBASMART and SALBA BALANCE marks to Salba Corp. with a license back and a reversion if Salba Corp. breached certain terms of the assignment, which naturally Salba Corp. did. As a result, the Ralstons regained ownership of their SALBASMART and SALBA BALANCE marks.

Now Salba Corp. and the Ralstons have teamed up, suing another company using the SALBA mark. I say “mark” instead of “word” because the website is using SALBA® (that is, with the circled “R” symbol).

The case caught my attention for two reasons: first, I expected that, as between Salba Corp. and the Ralstons, there would ultimately be a single entity that could claim rights to all the SALBA-formative marks because the existing registrations – SALBA, SALBASMART and SALBA BALANCE – are too close to co-exist without confusion. Instead, they now have a cooperative relationship, described this way in the complaint: “Plaintiff Salba Corp. is in the business of licensing the distribution of seed and food products that are sold under the SALBA trademark. Plaintiff SSNP [Salba Smart Natural Products, owned by the Ralstons] has the sole license to distribute and sell the SALBA seed and food products containing the SALBA seed under the ‘SALBA’ trademark throughout the United States.” It’s a fairly unusual situation where the various trademarks in a family of marks would be owned by different entities in the chain of distribution, but apparently it’s how they worked it out. I wonder what happens if there’s another falling out.

Second is the egregiousness of the infringement by the defendant, which makes me wonder whether it’s an infringement at all. Salba Corp. formerly had licensees who lost their licenses as a consequence of the reversion back to the Ralstons in the original suit. I wonder if this is one of them.

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

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